FINAL ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is the sixth office action on the merits. This office action is in response to the amendment filed on 10/02/2025. Applicant has amended claim 1. Claims 1-4, 6-8, and 12 are currently pending and being examined.
Specification
The amendments to the specification were received on October 2, 2025. These amendments are acceptable.
Claim Interpretation
With respect to functional claim limitations and their interpretation, please refer to the Office Action mailed November 27, 2024.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-8, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the limitation “a bypass fluidly connected to said channeled air duct so as to bypass the depolluting system, and configured to reroute the air flow around said depolluting system when the bypass is engaged” is not supported in Applicant’s disclosure. In Fig. 4 of the drawings, the bypass 15 (three are shown) do not “reroute the air flow around said depolluting system”. Rather, the bypasses 15 appear to direct air flow away from said depolluting system, as evidenced by their orientation. Additionally, the three bypasses 15 are not shown to be connected to one another.
In regards to the specification, there is no description that the bypasses “reroute the air flow around said depolluting system”. Rather, the bypass 15 “allow an air flow with acceptable pressure drops to be maintained at the inlet of the turbomachine 6 when a malfunction of the depolluting system 10 occurs” (¶ [0047], ll. 6-8). Additionally, the bypass 15 at the air outlet 4 “enables to guarantee the correct evacuation of the air flow in the event of a malfunction of the depolluting system 10” (¶ [0047], ll. 13-15). Therefore, it appears that the bypass at the air inlet 3 has separate utility from the bypass at the air outlet 4, which would imply that they are not connected to one another. Therefore, the above limitation constitutes new matter.
Claims 2-4, 6-8, and 12 are also rejected because they depend on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lussier (WO 2012/171105 A1: IDS reference), in view of Han (US 2021/0231322 A1).
Regarding Independent Claim 1, Lussier teaches (Figures 1-7) a test bench capable of being depolluted (10 or 80) for a turbomachine (16 or 86) comprising:
a channeled air duct (24, 42) comprising an air inlet (36) and an air outlet (39) to allow an air flow to circulate between (see abstract and Figures 1-3) said air inlet (36) and said air outlet (39), said channeled air duct (24, 42) further comprising a test chamber (19) configured for a test of the turbomachine (16 or 86), said test chamber (19) being located between said air inlet (36) and said air outlet (36); and
a depolluting system (sound, solid, and gas filters are included in the intake system and exhaust system; see Page 10, lines 3-6) positioned in said channeled air duct (24, 42) and configured to depollute an air flow (see Figures 1-3 and Page 10, lines 3-6) generated at least partially by the test of said turbomachine (16 or 86) in the test bench capable of being depolluted (10 or 80).
Lussier further teaches operating the aircraft engine on the test stand followed by feeding air into the test cell chamber (see Page 4, lines 18-19) and “In use, engine 16 will be operated within test cell 10 to test its parameters under different conditions. Outside ambient air will be pulled into test cell chamber 19 and will be fed towards and around engine 16 . . . [t]he combined outlet gas flow that comprises the secondary airflow and the engine combustion gases will flow through augmentor tube 42 towards exhaust system 39 to be exhausted outside of test cell 10” (Page 11, line 26 – Page 12, line 3).
However, Lussier does not teach means for controlling said depolluting system to enable to switch on or switch off the depolluting system when a test of said turbomachine is started or stopped;
sensors configured to sense operating conditions of the depolluting system and connected to the means for controlling said depolluting system for detecting, the means for controlling said depolluting system being configured to detect a malfunction of the depolluting system according to the operating conditions sensed by the sensors; and
a bypass fluidly connected to said channeled air duct so as to bypass the depolluting system, and configured to reroute the air flow around said depolluting system when the bypass is engaged;
wherein the means for controlling said depolluting system are further configured to engage the bypass in response to a sensed malfunction of the depolluting system.
Han teaches (Figs. 2 and 5-6) an air purification device (100 – Fig. 2) comprising:
a channeled air duct (111 – Figs. 5-6) comprising an air inlet (10 – Figs. 2 and 5) and an air outlet (20 – Figs. 2 and 5) to allow an air flow (the arrows shown in Fig. 5) to circulate between said air inlet (10) and said air outlet (20), said channeled air duct (111) further comprising a filter (150 – Figs. 5-6), said filter (150) being located between said air inlet (10) and said air outlet (20); and further comprising:
means for controlling (190 – Fig. 5) said air purification device (100) to enable to switch on or switch off the air purification device (100) – (via operation panel 196, see ¶ [0067], ll. 3-7: “The operation panel 196 may be provided with a button that allows a user to input commands such as a power on/off command, a filtering on/off command and the like”);
sensors (124, 134, and 144) configured to sense operating conditions of the air purification device (100) and connected to the means for controlling (190) said air purification device (100) for detecting (¶ [0049], ll. 7-10: “The above-described proximity sensors 124, 134, and 144, and the damper rotation motors 123, 133, and 143 may be electrically connected to the controller 190 through a distribution board 191”), the means for controlling (190) said air purification device (100) being configured to detect a malfunction of the air purification device (100) according to the operating conditions sensed by the sensors (124, 134, 144) – (¶ [0070], ll. 1-7: “When continuously receiving signals for closing the main inlet port damper 120 and the main outlet port damper 130 from the proximity sensors 124 and 134 of the main inlet port damper 120 and the main outlet port damper 130, the controller 190 determines that the main inlet port damper 120 and the main outlet port damper 130 are malfunctioning”); and
a bypass (116 – Figs. 5-6) fluidly connected to said channeled air duct (111) so as to bypass the air purification device (in this case, the filter 150), and configured to reroute the air flow around said air purification device (in this case, the filter 150) when the bypass (116) is engaged;
wherein the means for controlling (190) said air purification device (100) are further configured to engage the bypass (116) in response to a sensed malfunction of the air purification system (100) – (¶ [0070], ll. 5-8: “the controller 190 determines that the main inlet port damper 120 and the main outlet port damper 130 are malfunctioning, and then drives the bypass damper 140 to open the bypass passage section 116”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Lussier by including (1) means for controlling said depolluting system to enable to switch on or switch off the depolluting system when a test of said turbomachine is started or stopped; (2) sensors configured to sense operating conditions of the depolluting system and connected to means for controlling said depolluting system for detecting, the means for controlling said depolluting system being configured to detect a malfunction of the depolluting system according to the operating conditions sensed by the sensors; and (3) a bypass fluidly connected to said channeled air duct so as to bypass the depolluting system, and configured to reroute the air flow around said depolluting system when the bypass is engaged; wherein the means for controlling said depolluting system are further configured to engage the bypass in response to a sensed malfunction of the depolluting system, in order to minimize damage by immediately enabling the depolluting system to continue by preventing the depolluting system from being suspended until the malfunction is repaired, as taught by Han (¶ [0010], ll. 6-11).
The recitations “to enable to switch on or switch off the depolluting system when a test of said turbomachine is started or stopped” and “configured to reroute the air flow around said depolluting system when the bypass is engaged” are statements of intended use and the structure of the device as taught by Lussier, in view of Han, can perform the function. It has been held that “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original); MPEP 2114.
It has also been held that, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114(II). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The structure of the applied prior art, being similar to the structure of the present application, as claimed and disclosed, the two structures will obviously function the same under similar circumstances.
Regarding Claim 2, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 1. Lussier further teaches (Figures 1-7) wherein said depolluting system (sound, solid, and gas filters are included in the intake system and exhaust system; see Page 10, lines 3-6) is positioned at said air inlet (36; see Page 10, lines 3-6).
Regarding Claim 4, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 1. Lussier further teaches (Figures 1-7) wherein said depolluting system (sound, solid, and gas filters are included in the intake system and exhaust system; see Page 10, lines 3-6) is positioned at said air outlet (39; see Page 10, lines 3-6).
Regarding Claim 6, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 1. Lussier further teaches (Figures 1-7) wherein said channeled air duct (24, 42) further comprises an outlet portion (at 54) positioned between said test chamber (19) and said air outlet (39).
Regarding Claim 8, Lussier, in view of Han, teaches the invention as claimed and as discussed above. Lussier further teaches (Figures 1-7) wherein said turbomachine (16 or 86) is an aircraft turbomachine (see Page 8, lines 20-22).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lussier (WO 2012/171105 A1: IDS reference), in view of Han (US 2021/0231322 A1), as applied to claim 1 above, and further in view of Taccogna (US 2016/0290155 A1).
Regarding Claim 3, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 1. Lussier, in view of Han, does not teach wherein said channeled air duct further comprises an inlet portion positioned between said air inlet and said test chamber, said inlet portion comprising a smoothing means that obtains a laminar flow towards said test chamber, and wherein said depolluting system is positioned between said smoothing means and said test chamber.
Taccogna teaches (Figures 1-5) an air duct (20, 12, 22) comprising an inlet portion (20) positioned between an air inlet (8) and a test chamber (at 12), said inlet portion (20) comprising a smoothing means (28) that obtains a laminar flow towards (14; see Figure 1 and Paragraph 0047) said test chamber (12), and wherein a depolluting system (30) is positioned between (see Figure 1) said smoothing means (28) and said test chamber (at 12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Lussier, in view of Han, to have the air duct further comprises an inlet portion positioned between said air inlet and said test chamber, said inlet portion comprising a smoothing means that obtains a laminar flow towards said test chamber, and wherein said depolluting system is positioned between said smoothing means and said test chamber, as taught by Taccogna, in order to allow the air descending from the inlet duct to be deflected in the horizontal direction and to intercept debris liable to disrupt the test and damage the engine (Paragraph 0050 of Taccogna).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lussier (WO 2012/171105 A1: IDS reference), in view of Han (US 2021/0231322 A1), as applied to claim 6 above, and further in view of Helgeson (US 2011/0048847 A1).
Regarding Claim 7, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 6. Lussier, in view of Han, does not teach wherein said channeled air duct further comprises an air flow pipe portion with a circular cross-section positioned between a test chamber and said outlet portion.
Helgeson teaches (Figures 1-7) wherein a channeled air duct (at 92; see Figure 5) comprises an air flow pipe portion (32) with a circular cross-section (see Figures 1-3 and 7) positioned between (see Figure 5) a test chamber (at 91) and said outlet portion (134).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Lussier, in view of Han, to have the air duct comprises an air flow pipe portion with a circular cross-section positioned between a test chamber and said outlet portion, as taught by Helgeson, in order to mix cold air to the hot jet exhaust to reduce its temperature so that the velocity and noise produced by the jet engine exhaust is reduced (see abstract of Helgeson).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lussier (WO 2012/171105 A1: IDS reference), in view of Han (US 2021/0231322 A1), as applied to claim 1 above, and further in view of Okamoto et al. (US 2006/0150818 A1).
Regarding Claim 12, Lussier, in view of Han, teaches the invention as claimed and as discussed above for claim 1. Lussier, in view of Han, does not teach wherein said depolluting system comprising at least one of the following depolluting means: fine particle sensor, fine particle filter, by ionization or mechanical, an air washing unit with a water flow, and filter for capturing greenhouse gases.
Okamoto teaches (Figures 1-11) a depolluting system (30) comprising at least one fine particle sensor (55), at least one fine particle filter, by ionization (32), and at least one filter (33) for capturing greenhouse gases (nitrogen oxides; see Paragraph 0117).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Lussier, in view of Han, to have the depolluting system include at least one fine particle sensor, at least one fine particle filter, by ionisation, and at least one filter for capturing greenhouse gases, as taught by Okamoto, in order to reduce the occurrence of air contamination without the need of frequent cleaning or replacement (see Paragraph 0006 of Okamoto).
Response to Arguments
Applicant’s arguments regarding the application of prior art on the new limitations in claim 1 have been considered but are moot in view of the new ground(s) of rejection, necessitated by Applicant's amendments. To the extent possible, Applicant's arguments have been addressed in the body of the rejections at the appropriate locations.
Applicant’s arguments regarding the issue of new matter (see REMARKS, pgs. 7-9) have been fully considered but are not persuasive.
Applicant’s arguments in pgs. 7-9 do not show that the bypass (as shown in Fig. 4 with ref. no. “15”) actually reroutes air around the depolluting system. Rather, Applicant’s argument is based solely on the dictionary definition of the word “bypass”. While the specification uses the term “bypass” to represent the structure of ref. no. 15, neither the drawings nor the specification actually discloses that any of the bypasses reroutes air around the depolluting system.
The specification provides the following (in ¶ [0047]) for the bypass 15 located upstream of the inlet of the turbomachine 6: “to allow an air flow with acceptable pressure drops to be maintained at the inlet of the turbomachine 6 when a malfunction of the depolluting system 10 occurs” and “ensures that there is no pressure drop upstream of the turbomachine 6 that causes a pressure difference of less than 15 mbar between the upstream test chamber and the air inlet 3 of the channelled duct 2”. For the bypass 15 located at the outlet 4, this bypass “enables to guarantee the correct evacuation of the air flow in the event of a malfunction of the depolluting system 10”. Therefore, it appears that the bypass at the air inlet 3 has separate utility from the bypass at the air outlet 4, which would imply that they are not connected to one another.
Based on the above recitations of the specification, the use of the term “bypass” in the specification is merely nomenclature, not a functional description of the structure. Therefore, the claimed limitation “a bypass…configured to reroute air flow around said depolluting system” constitutes new matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY NG whose telephone number is (571)272-2318. The examiner can normally be reached M-F 9:30 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devon Kramer can be reached at 571-272-7118. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY NG/ Examiner, Art Unit 3741 /DEVON C KRAMER/Supervisory Patent Examiner, Art Unit 3741